The Complainant is Desarrollo Marina Vallarta, S.A. de C.V. of Guadalajara, Mexico, represented by Holland & Knight LLC, United States of America.
The Respondent is Luis Bonequi of Guadalajara, Mexico. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 3, 2015. On September 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details; and, that the Domain Name has been placed on lock to prevent any transfers or changes to the registration information during the proceedings.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Panel has independently determined and agrees with the Center's assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and of the commencement of administrative proceedings on September 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 2, 2015.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on October 19, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from the Complainant or the Respondent regarding submissions, waivers or extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, as provided for in paragraph 12 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules. 4. Factual Background
According to the information and evidence provided by the Complainant, and due to the fact that such information and evidence was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:
The Complainant is one of the largest and best known resort hotel service providers in Mexico. The Complainant has used the MAYAN formative marks and names in connection with its resort hotel services since at least as early as 1984, and the Complainant offers timeshare programs at its properties. The Complainant's MAYAN formative marks and names include the mark MAYAN PALACE.
The Complainant provided Internet advertising materials concerning some of the Complainant's MAYAN branded resort hotel and time share properties. These advertising materials show that the Complainant operates, inter alia, six MAYAN PALACE branded resort hotel and time share properties located in the popular Mexican holiday destinations of Riviera Maya, Nuevo Vallarta, Puerto Penasco, Mazatlan, Puerto Vallarta and Acapulco.
The Complainant has registered all of the following MAYAN and MAYAN PALACE formative marks with the Instituto Mexicano de la Propiedad Industrial ("IMPI") in connection with its services: MAYAN RESORTS (and design); MAYAN BREEZE; MAYAN DE CORTES; MAYAN EMPEROR; MAYAN EXPERIENCE; MAYAN FAIRWAYS; MAYAN ISLAND; MAYAN ISLAND (AND DESIGN); MAYAN ISLAND ACAPULCO (AND DESIGN); MAYAN KIDS CLUB (AND DESIGN); MAYAN LAKES (AND DESIGN); MAYAN LAKES ACAPULCO (AND DESIGN); MAYAN LAKES BY MAYAN ISLAND (AND DESIGN); MAYAN LINK; MAYAN MEMORIES; MAYAN OASIS; MAYAN PALACE (AND DESIGN); MAYAN PALACE ADVENTURE PARK; MAYAN PALACE VACATION CLUB; MAYAN PALACE VIDAFEL ACAPULCO HOTEL & VILLAS RESORT (AND DESIGN); MAYAN PARADISE; MAYAN PRINCESS; MAYAN RESERVATIONS; MAYAN SEA GARDEN; MAYAN HOTELS SEA GARDEN (AND DESIGN); MAYAN SEA GARDEN HOTELS (AND DESIGN); MAYAN TOWN; MAYAN VIEW; CLUB MAYAN LAKES; GO MAYAN; GO MAYAN ACAPULCO (AND DESIGN); THE ELITE AT MAYAN PALACE; THE GRAND MAYAN (AND DESIGN), THE GRAND MAYAN BEACH, VILLAS & GOLF HOTEL RESORT (AND DESIGN); THE MAYAN; THE MAYAN ELITE; THE MAYAN KING RESORT; THE MAYAN KINGDOM; THE MAYAN MIRAGE; THE SIGNATURE AT MAYAN PALACE; VIDAFEL MAYAN PALACE; AND VILLAS MAYAN DIAMANTE (and design). Copies of the Complainant's registrations for these marks were attached to the Complaint.
Noting that the Respondent has an address in Mexico, the Complainant has (1) conducted an ownership search for trademark registrations owned by the Respondent in the MARCANET database of the IMPI and (2) conducted trademark searches for the mark GRUPO MAYAN PALACE, and variants with and without spaces, in the MARCANET database of the IMPI. The search results indicate that the Respondent does not own any Mexican trademark registrations and that the mark GRUPO MAYAN PALACE is not registered in Mexico.
The Domain Name was registered on July 2, 2015. The Domain Name does not resolve to any active website. 5. Parties' Contentions A. Complainant
It is the Complainant's belief that the Panel may conclude that the Complainant has rights in its combined MAYAN and MAYAN PALACE formative service marks, and that the marks are well known in the hospitality industry.
The Domain Name has been formed by [i] co-opting Complainant's distinctive MAYAN PALACE mark and name [ii] and combining it with the Spanish word "grupo" to suggest the collection of six MAYAN PALACE branded resort hotels and time share properties that the Complainant operates in popular holiday destinations in Mexico.
It is well settled that the generic Top-Level Domain ".com" may be excluded from the comparison between a complainant's trademark and a domain name.
The Domain Name immediately conveys the false and misleading impression that the Domain Name identifies a Complainant's web address, and it is confusingly similar to the Complainant's MAYAN PALACE formative service marks as the result. The Panel may conclude that the Domain Name is confusingly similar to a service mark in which the Complainant has rights.
The Panel may conclude that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
i. The Complainant has not authorized the Respondent to register or use the Domain Name and there is no connection between the Complainant and the Respondent.
ii. The Respondent is identified as Luis Bonequi. This information alone is sufficient to permit the inference that the Respondent is not commonly known by the Domain Name, the name GRUPO MAYAN PALACE, or any name reflected thereby.
There is no website associated with the Domain Name. The Domain Name is parked with the Registrar.
The Respondent has used the mark GRUPO MAYAN PALACE and an email address reflecting the Domain Name ({…}@) to defraud the Complainant's MAYAN PALACE time share program members. The Respondent has made no legitimate commercial or noncommercial use of the Domain Name.
The Domain Name should be considered as having been registered and being used in bad faith for the following reasons:
i. The Complainant's MAYAN formative marks were well-known prior to the date upon which the Respondent registered and used the confusingly similar Domain Name incorporating the mark.
The Respondent registered the Domain Name on July 2, 2015; over 20 years after the Complainant registered its first MAYAN PALACE formative mark with the IMPI, and; over 30 years after the Complainant began using its MAYAN formative marks in connection with its resort hotels and time share services.
The Complainant's MAYAN formative marks became well known during that period of prior use. It is well settled that the registration and use of a domain name that is confusingly similar to a well-known mark is indicative of bad faith. In the present case, the Respondent is located in the very city where the Complainant is headquartered (Guadalajara, Mexico). The Panel may conclude that the Respondent has registered and used the Domain Name in bad faith accordingly.
ii. It is claimed by the Complainant that the Respondent is using the Domain Name to defraud the Complainant's customers. The Complainant has indicated that the Respondent has used the mark GRUPO MAYAN PALACE and an email address reflecting the Domain Name ({…}@) to pose as the Complainant, and to collect taxes and fees supposedly associated with fraudulent time share rental schemes. The Complainant has indicated that under this scheme, the Respondent purports to act as a rental agent for time share owners who wish to realize investment income from renting out their time share units.
The Complainant has further indicated that the Respondent informs the time share owner (1) that the time share unit has been rented, (2) that the rental funds have been received and placed in a bank account and (3) that the funds are ready for release. That the Respondent then provides the time share owner a copy of a communication which appears to be addressed from in-house counsel for the Complainant to the purported agent, and asks the purported agent to direct the time share owner to pay taxes and fees associated with the rental transaction to permit the release of funds. That this apparent communication from the Complainant works to gain the confidence of the time share unit owner at the time he/she is asked to make payments. However, the Complainant indicates, that when the time share owner pays the taxes and fees to the Respondent, the fraud is complete. That there is no rental arrangement, and there are no rental funds.
The alleged communications bears the mark GRUPO MAYAN PALACE, and the email address reflecting the Domain Name ({…}@). However, the sender of this communication, "Jose Lopez" is not, as represented, an employee of the Complainant or the Complainant's legal representative. In the particular case referred by the Complainant, it is stated that the time share owner paid approximately $12,000 to the Respondent in connection with the fraudulent rental scheme, including a supposed value added tax of $7,779.20 reflecting 16% of the supposed rental price of $ 48,620 (probably the amount that would have been due if there was an actual rental).
The documents submitted by the Complainant consist of other documents associated with the alleged Respondent's fraudulent time share rental scheme, including a falsified Mexican internal revenue service ("SAT") document concerning the 16% VAT tax and the genuine receipts for two payments ($7,779.20 and $4,522) made by the defrauded time share owner.
Note is taken that the name of the Complainant's defrauded timeshare program member has been obscured from all of these documents to protect his/her privacy.
iii. The facts and circumstances of the present case suggest not only that the Respondent was aware of the Complainant and the Complainant's mark when the Respondent registered and used the Domain Name, but that the Respondent has registered and used the Domain Name with the bad faith intent to defraud the Complainant's time share program members by impersonating, inter alia, the Complainant to obtain various payments.
The Complainant finally contests that in addition to the foregoing, or in the alternative, the Panel may conclude that the Respondent's passive holding of the Domain Name constitutes sufficient evidence of its bad faith use and registration. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel considers that the Respondent, by registering the Domain Name agreed to be bound by all terms and conditions of the Registrar's Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar's Agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider's supplemental rules, in the present case being the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar's Agreement, the Respondent agreed and warranted that neither the registration of its Domain Name nor the manner in which it may intend to use such Domain Name will infringe the legal rights of a third party.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that respondents be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of the panel be properly made and the parties be notified of the appointment of the panel; and that both parties be treated with equality in the administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the proper notification of the Complaint and the commencement of the proceedings giving the Respondent the opportunity to file a response.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and, (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This Panel finds that the Domain Name is confusingly similar to the Complainant's widely known MAYAN PALACE trademark. The Complainant's trademark was registered significantly earlier than the date of registration of the Domain Name.
In addition, the Domain Name comprises the Complainant's MAYAN PALACE trademark, with the addition of the Spanish word "grupo", which means "group". The addition of the word "grupo" does not prevent a finding of confusing similarity between the Complainant's MAYAN PALACE trademark and the Domain Name. Moreover, as this word clearly referred to those entities integrating the MAYAN PALACE hospitality group, its addition increases the confusion.
Furthermore, the addition of the generic Top-Level Domain ".com" is not a distinctive element, it is just a necessary element required for the registration of the Domain Name.
The first element of the Policy has been established. B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Domain Name.
There is no indication that the Respondent may have used or prepared to use the Domain Name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; the Respondent is not commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and that the Respondent has not demonstrated, nor appears to have any rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In order to prevail in a domain name dispute administrative proceeding, the element of bad faith as provided under paragraph 4(a) of the Policy must be met. In this respect, the Panel may consider the specific circumstances referred to in paragraph 4(b) of the Policy as evidence that a domain name has been registered and is being used in bad faith, but only in an illustrative but not limitative manner.
Considering the above, this Panel considers in this particular case, that we have the presence of the element of bad faith by the fact that the Respondent registered the Domain Name, which incorporates the widely known trademark MAYAN PALACE, that also reflects a widely known hospitality business in the community that corresponds to the Complainant, as the same has been sufficiently promoted and marketed.
The Panel furthermore finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and use of the Domain Name by the Respondent is in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, and the Panel would add, to the Respondent's web based emails, by creating a likelihood of confusion with the Complainant's trademark MAYAN PALACE, as to the source, sponsorship, affiliation or endorsement of the Domain Name.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15(a) of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Pedro W. Buchanan Smith
Sole Panelist
Date: October 25, 2015
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